Ex Parte Ma

Patent Trial and Appeal Board

Jun 18, 2013

11049905 (P.T.A.B. Jun. 18, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/049,905 02/03/2005 Kenneth Ma 14528.00305 1873
16378 7590 06/19/2013
Broadcom/BHGL
P.O. Box 10395
Chicago, IL 60610
EXAMINER
AYASH, MARWAN
ART UNIT PAPER NUMBER
2185
MAIL DATE DELIVERY MODE
06/19/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KENNETH MA
____________________

Appeal 2010-011884
Application 11/049,905
Technology Center 2100
____________________

Before JOSEPH L. DIXON, JEFFREY S. SMITH, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

STRAUSS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/049,905

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-11, 17, 19, 23-30 and 38-49.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

The claims are directed to a data storage system and method that
supports personal video recorder functionality. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A method of flexibly implementing data storage, by a first
data storage device, for use by one or more personal video
recorders, said method comprising:
first communicatively coupling said first data storage
device to said one or more personal video recorders, said first
data storage device comprising one or more first data storage
drives;
receiving one or more second data storage drives into
said first data storage device; and
second communicatively coupling said first data storage
device to one or more second data storage devices, each of said
one or more second data storage devices comprising one or
more third data storage drives, wherein a data pool may be
generated from unused concatenated portions of said one or

1 Although the Notice of Appeal is silent as to specific claims (“Applicant
hereby appeals to the Board of Patent Appeals and Interferences from the
last decision of the examiner”, (Notice of Appeal, 1) and “Claim(s) 1-
11,17,19,23-30 and 38-49 is/are rejected.” (Final Rej. 1)) being appealed and
both the Appeal and Reply Briefs list only claims 1, 4, 6,9-11, 17, 19, 23,
25, 30, 38, 40, 43, 44, 46, 47, and 49 as being the subject of the appeal (App.
Br. 1, Reply Br. 2), because all rejected claims are included in the Claims
Appendix and indicated to be “involved in the Appeal” (App. Br. 73), we
resolve the resulting ambiguity in favor of considering all rejected claims to
be on appeal.
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more first data storage drives, said one or more second data
storage drives, and said one or more third data storage drives.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Olson US Pat. Pub.
2004/0258390 A1
Dec. 23, 2004

Joe Froehlich, Windows 2000 Disk Management (“Win2K”), Jul. 2000.

Andrew S. Tanenbaum (“Tanenbaum”), Structured Computer
Organization, 3rd ed. 1990.

REJECTIONS2
The Examiner made the following rejections:
Claims 1-11, 17, 19, 23-30, 43-49 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Olson and Win2K. Ans. 3.
Claims 38-42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Olson, Win2K, and Tanenbaum. Ans. 6.
Claims 44-45 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Olson. Ans. 8.

2 Appellant’s statement of the Grounds of Rejection to be Reviewed on
Appeal (App. Br. 12) omits from the respective rejections claims not
indicated to be included in the appeal (see fn. 1.) However, even this listing
is ambiguous. For example, claims 39, 41, and 42 are not included within the
listing of claims on appeal (App. Br. 1, 12, Reply Br. 2) yet Appellant urges
patentability of those claims at page 70 of the Appeal Brief based on
dependency from claims argued to be allowable. Conversely, while claim 19
is included within the range of claims on appeal, no separate substantive
argument is made in connection therewith.
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ISSUES ON APPEAL
Based on Appellant’s arguments in the Appeal Brief (App. Br. 13-72)
and Reply Brief (Reply Br. 4-33), the issues presented on appeal are:
(i) whether the combination of Olson and Win2K teaches or
suggests the disputed limitations of claims 1, 4, 6, 9, 10, 17,
23, 25, 43, 44 and 47;
(ii) whether the combination of Olson and Win2K is proper in
rejecting claims 11, 30, 403, 46 and 49 under 35 U.S.C.
§ 103(a);
(iii) whether the combination of Olson, Win2K, and Tanenbaum
teaches or suggest the disputed limitations of claim 38; and
(iv) whether claim 44 is anticipated by Olson.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions as to all rejections. We adopt as our own (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellant’s Appeal Brief. We concur with the
conclusions reached by the Examiner. For emphasis, we highlight

3 Although claim 40 is rejected under 35 U.S.C. § 103(a) over Olson,
Win2K, and Tanenbaum, Appellant addresses the rejection in the section of
the Appeal Brief addressing the rejections of claims 1-11, 17, 19, 23-30, 43-
49 over the combination of only Olson and Win2k, only disputing the
propriety of the combination of those two latter references.
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Appellant’s arguments seriatim as they are presented in the Appeal Brief,
pages 13-72, and Reply Brief, pages 4-33.

Rejections Under 35 U.S.C. § 103(a)
Claim 1
At pages 4-6 of the Reply Brief Appellant takes exception to the
Examiner’s Background Discussion and characterization of the invention. In
particular, Appellant contends that, in applying the broadest reasonable
interpretation, the Examiner has ignored specific claim limitations and “has
made conclusory statements without providing any evidence from the cited
reference to support his statements.” Reply Br. 6. However, as Appellant
provides no indication of specific limitations ignored by the Examiner or
statements unsupported by evidence, we find no reversible error.

1st Argument
Appellant contends that Olson fails to teach or suggest receiving one
or more second data storage drives into said first data storage device, as
recited in Claim 1. App. Br. 16-18, Reply Br. 7-9. In particular, Appellant
characterizes the Olson’s disclosure that “[f]urther, optionally, one or more
of these memory devices, such as device 28, can a part of a PC 26 on the
network” as misworded and incapable of being interpreted clearly. Reply Br.
8 citing Olson paragraph 34. Based at least in part on the alleged fatally
confusing miswording, Appellant argues that “the evidence presented by the
Examiner does not show a teaching of ‘receiving one or more second data
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storage drives into said first data storage device,’ as recited in Claim 1.”
Reply Br. 9. We disagree.
We find the cited portion of Olson includes an easily overlooked and,
at most, minor typographical or clerical error by omission of the word “be”
such that the corrected sentence should read: “[f]urther, optionally, one or
more of these memory devices, such as device 28, can be a part of a PC 26
on the network.” Even if such were not the case, we would nonetheless agree
with the Examiner that, based on Olson, “PC 26, which is a storage device,
may comprise any number of memory devices such as hard drive 28, in
other words, PC 26 may have two, three, four, etc[.] disk drives . . . and for
PC to have for example two hard drives, it would inherently have to receive
them.” Ans. 10.
Conversely, Appellant provides insufficient evidence that, having
Olson before them, one of ordinary skill in the art at the time of the
invention would have found including a second storage data storage drive
into PC26 uniquely challenging or difficult. See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int’l
Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)). Therefore, Appellant’s first
argument is not persuasive of Examiner error, and we agree with the
Examiner’s findings that Olson discloses the disputed limitation of
“receiving one or more second data storage drives into said first data storage
device.”

2nd Argument
Appellant next contends that Olson fails to teach or suggest the
“method step of ‘second communicatively coupling said first data storage
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device to one or more second data storage devices, each of said one or more
second data storage devices comprising one or more third data storage
drives,’ as recited in the third clause of Claim 1.” App. Br. 17, Reply Br. 9.
In particular Appellant argues that Olson’s allegedly misworded sentence in
paragraph 34 fails to provide evidentiary support for the Examiner’s finding
that Olson teaches or suggests that that “PVR is coupled to PC, the PC
comprising any number of data storage drives.” App. Br. 18, Reply Br. 11
quoting Ans. 3, 11. The Examiner responds that Appellant’s argument is
both conclusory and “clearly contradicted by Fig. 1 in view of paragraph
0034 of Olson . . . .” Ans. 11. We agree with the Examiner while, in
contrast, Appellant has provided insufficient evidence or argument to
persuade us of the contrary.
Appellant further contends that Olson fails to disclose network
attached storage devices or the concatenation of unused storage into a
logical/virtual volume (i.e., data pool.) App. Br. 19, Reply Br. 11. The
Examiner responds that Olson discloses “PVR [personal video recorder] 10
is connected via network [16] through interface NIC 12 (Olson 0021) to
several storage devices, hence, the disclosure of network attached/connected
storage devices.” Ans. 11. The Examiner further finds that virtual storage
management system (VSM) 20 of PVR 10 can access additional memory via
network 16 to effectively concatenate and aggregate the individual storage
capacities. Id. While Appellant characterizes the Examiner’s finding as a
“personal opinion” mischaracterizing Olson (Reply Br. 12), we find
otherwise. The Examiner has set forth a reasoned interpretation of Olson’s
disclosure as teaching or suggesting generating a data pool from unused
concatenated portions of said one or more fist data storage drives, said one
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or more second data storage drives, and said one or more third data storage
drives. See Ans. 11. In contrast, Appellant provides insufficient evidence
that the multiple networked storage devices described by Olson fail to teach
or suggest the disputed claim limitation.
Appellant further contends that Win2k, cited by the Examiner for an
explicit disclosure of a generating a data pool from unused concatenated
portions of data storage drives, excludes the use of Appellant’s logical drives
in a spanned volume such that Win2k’s disclosure of a resultant data pool is
not applicable to Appellant’s disclosed system. App. Br. 21-22. The
Examiner responds that Appellant appears to be arguing the Specification
rather than the claims and that, therefore, such arguments are not persuasive.
Ans. 11. We agree with the Examiner that Appellant’s arguments are not
commensurate in scope with claim 1 and therefore are not persuasive of
error. Furthermore, even if otherwise, Appellant is responding to the
rejection by attacking the Win2k reference individually, even though the
rejection is based on the combined teachings of the references. That is, the
Examiner relies on the combination of Olson and Win2k, not Win2k alone,
the combination teaching or suggesting generating a data pool from unused
concatenated portions of data storage drives. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Therefore we find that the
combination of Olson and Win2k teaches or suggests the disputed claim
language of “wherein a data pool may be generated from unused
concatenated portions of said one or more first data storage drives, said one
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or more second data storage drives, and said one or more third data storage
drives.”
For the reasons supra and in view of Appellant’s failure to provide
sufficient evidence or argument to the contrary, we find no Examiner error
and sustain the rejection of claim 1 and of dependent claims 2, 3, 5, 7, and 8
not argued separately.

Claim 17
3rd Argument
Appellant contends that Olson fails to disclose “receiving one or more
second data storage drives by said data storage device, said data storage
device comprising one or more first data storage drives.” App. Br. 23-26.
This contention is not persuasive for the reasons supra. Furthermore,
Appellant’s additional contention that, by disclosing that each memory
device can be an entire drive or a portion of a drive, Olson teaches away
from receiving a second storage drive (App. Br. 26-27) is also not persuasive
of error. As detailed supra, we agree with the Examiner that Olson discloses
receiving a second storage drive. While Olson also discloses use of a portion
of a storage drive, this alternative does not detract from the use of a second
storage drive. Teaching an alternative or equivalent method does not teach
away from the use of a claimed method. In re Dunn, 349 F.2d 433, 438
(CCPA 1965).
For the reasons supra and in view of Appellant’s failure to provide
sufficient evidence or argument to the contrary, we find no Examiner error
and sustain the rejection of claim 17 and of dependent claims 19 and 27-29
not separately argued.
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Claim 23
4th Argument
Appellant’s contention that Olson fails to disclose a single physical
interface for communicatively coupling said data storage device to said one
or more personal video recorders (PVRs). App. Br. 33. The Examiner
responds that
at least a single physical interface must connect PVR 10 to
HDD 14 and that a single physical interface must connect PVR
to memory 22, 24 and PC 26 (Olson Fig. 1). Moreover, a PC is
a data storage device comprising a network interface for
communicatively coupling itself (a data storage device) to the
PVR shown in Fig. 1 of Olson.
Ans. 12.
We agree with the Examiner that Olson’s PVR 10 is coupled to HDD
14, PC 26 is coupled to network 16 via an interface, and that PVR 10 is
coupled via network interface card (NIC) 12 to memories 22, 24 and PC 26,
thereby also disclosing a physical interface. We also agree that PC 26
comprises a network interface coupling it to PVR. Furthermore we agree
with the Examiner’s finding that these interfaces teach or suggest the
claimed single physical interface for communicatively coupling said data
storage device to said one or more personal video recorders (PVRs.)4

4 Should prosecution continue the Examiner should consider whether the
language “single physical interface,” is adequately supported by Appellant’s
Specification as originally filed. We note the emphasized wording was
added by the Amendment filed Feb. 29, 2008 but that the Specification does
not disclose a reason why additional physical interfaces are to be excluded.
See Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed.
Cir. 2012) (“Negative claim limitations are adequately supported when the
specification describes a reason to exclude the relevant limitation.”)
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For the reasons supra and in view of Appellant’s failure to provide
sufficient evidence or argument to the contrary, we find no Examiner error
and sustain the rejection of claim 23 and of dependent claims 24 and 26 not
separately argued.

Claim 44
5th Argument
Appellant contends that Olson fails to disclose “a data storage device
comprising a plurality of hard disk drives.” App. Br. 36. In support of this
contention, Appellant directs attention to arguments in response to the 1st,
2nd, and 4th, arguments. Reply Br. 17. As we find Appellant’s arguments to
be lacking sufficient evidence or argument to persuade us of Examiner error
in each of these instances for the reasons supra, we likewise and for the
same reasons find no Examiner error in connection with the rejection of
claim 44. Therefore we sustain the rejection of claim 44.

Claim 47
6th Argument
Appellant contends that Olson fails to disclose “one or more interfaces
for communicatively coupling said data storage device with one or more
computing devices to facilitate said storing and retrieving,’ as recited in
Claim 47.” App. Br. 46. We find this contention unpersuasive of Examiner
error for the reasons supra in connection with claim 1, e.g., 2nd Argument.
Appellant’s contention that Olson fails to disclose a data storage device
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lacking a video display interface (App. Br. 47-48) is also unpersuasive of
Examiner error for the reasons set forth by the Examiner. See Ans. 13.5
For the reasons supra and in view of Appellant’s failure to provide
sufficient evidence or argument to the contrary, we find no Examiner error
and sustain the rejection of claim 47 and of dependent claim 48 not
separately argued.

Claims 4 and 25
7th Argument
Appellant contends that Olson fails to disclose a personal video
recorder (PVR) lacking a data storage medium. App. Br. 49-51. The
Examiner responds that Olson’s teaching of a “diskless” PVR teaches the
disputed limitation. Ans. 13. We agree with the Examiner. Olson’s diskless
PVR stores its operating system (OS) in, for example, semiconductor
memory “which permits . . . the PVR to be diskless, with data storage on
other memory devices as described below.” Olson [0020.] Olson describes
memory devices 22, 24 and 28 as external to and connected to PVR 10 by
network 16. Appellant argues that Olson’s semiconductor memory storing
the OS constitutes a data storage medium excluded by the term of claims 4
and 25. We disagree.

5 Should prosecution continue the Examiner should consider whether the
language “lacking a video display interface” is adequately supported by
Appellant’s Specification as originally filed. We note the claim 47 including
the emphasized wording was added by the Amendment filed Feb. 29, 2008
but that the Specification does not disclose a reason why a video display
interface should be excluded. See Santarus, Inc. 694 F.3d at 1351 (“Negative
claim limitations are adequately supported when the specification describes
a reason to exclude the relevant limitation.”)
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We look to Appellant’s Specification in construing the disputed claim
limitation of “lacks a data storage medium.”. The Specification discloses
PVRs lacking (i)“an exemplary hard disk drive” (Spec. 14), or (ii) “a storage
facility, such as a hard disk drive, [so that the PVR] may store any data it
receives into the NAS 100” (Spec. 16.) The Specification further discloses
that PVR 316 “may lack a storage device [so that] PVR 316 retrieves data
from the NAS 300 or from its data storage device (if applicable), for display
to the connected monitor 318”, so that content is stored elsewhere. Spec. 20.
However, there is no disclosure of eliminating all data storage including, for
example, RAM 508 and Flash memory 512 (Fig. 5) or On-Chip RAM 608
(Figure 6.) That is, as used in Appellant’s Specification, lacking a storage
facility refers only to omission of a hard drive and not to all storage such as
used in connection with an OS. Therefore, consistent with Appellant’s
disclosure, we find that the disputed limitation of “lacking a data storage
medium” is taught or suggested by Olson’s disclosure of a diskless PVR.
For the reasons supra and in view of Appellant’s failure to provide
sufficient evidence or argument to the contrary, we find no Examiner error
and sustain the rejection of claims 4 and 25.

Claims 6 and 9
8th Argument
Appellant contends that “Win2k, at Figure L does not teach anything
about ‘wherein said data striping utilizes hard disk drives of different sizes,’
as recited in Claim 6.” App. Br. 53. We disagree for the reasons set forth by
the Examiner. Ans. 5. In particular, Win2k discloses data striping and, as
depicted in Win2k’s Figure L, the attached storage devices may be of
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different sizes. See also Olson Abstract cited by the Examiner. Id.
Furthermore, we agree with the Examiner that Appellant’s arguments are
conclusory and accordingly unpersuasive.6 Therefore, for the reasons supra,
and in the absence of sufficient evidence or argument to the contrary, we
find Appellant’s contention unpersuasive of Examiner error in connection
with claim 6 and, for the same reasons, claim 9 and sustain the rejection of
those claims.

Claim 10
9th Argument
Appellant contends that Win2k discloses a RAID-5 configuration
rather than the claimed RAID 1. App. Br. 55. The Examiner responds that
“that mirrored sets/volumes as disclosed in the cited table [of Win2k]
correspond to the claimed RAID 1.” Ans. 14. In the absence of sufficient
contradictory evidence, we agree with the Examiner. Furthermore, we note
that Win2k discloses that RAID 1or RAID 5 may be used on multiple-disk
systems: “[i]f you want to implement RAID fault-tolerance features, such as
mirroring (RAID 1) or striping with parity (RAID 5), you must use multiple
dynamic disks.” Win2k p. 5. Therefore, based on the record before us, we
find that Win2k teaches or suggests the disputed limitation of implementing
RAID 1 and sustain the rejection of claim 10.

6 Attorney arguments and conclusory statements that are unsupported by
factual evidence are entitled to little probative value. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984.)

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Claims 11, 30, 40, 46 and 49
10th Argument
Appellant argues that Olson is not combinable with Win2k (App. Br.
57-60) because:
i. “[O]ne of ordinary skill in the art knowledgeable with the
‘storage and distribution of programs recorded by a Personal
Video Recorder’ would not be knowledgeable with the
teachings provided by Win2k, which deals with managing disks
using a particular operating system, and vice-versa. App. Br.
57.
ii. “[T]he Examiner has not provided any motivation,
obtained from the cited references, to combine the teachings of
the cited references. “ Id.
The Examiner responds that “the references are indeed combinable
since the PC 26 in Olson would need to make use of disk management
methods such as those taught in Win2k.” Ans. 14. Appellant disputes
whether one of ordinary skill “would need” to combine the references.
Reply Br. 25. (Emphasis in original.) Furthermore Appellant contends that
“the Examiner has not provided the reasoning with necessary rational
underpinning to support the conclusion of obviousness.” Id. We disagree
with Appellant.
Appellant has provided insufficient evidence that one of ordinary skill
in the art of PVRs would not look to the teachings of Win2k to provide
specific storage features as per the disputed claims. Furthermore, we
disagree that the Examiner has not properly supported the combination.
Instead, upon reviewing the record before us, we find that the Examiner has
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articulated reasoning with rational underpinnings sufficient to justify the
legal conclusion of obviousness. In other words, we find an ordinary artisan
would be motivated to use the hot swappable drives of Win2k with the data
storage method of Olson to provide a method of implementing data storage
providing conventional disk management features. Therefore, Appellant’s
assertion that the references were improperly combined is not persuasive of
error and accordingly, the Examiner has properly relied upon the
combination of Olson and Win2k in formulating the disputed rejections
under 35 U.S.C. § 103(a).
Therefore, for the reasons supra, and in the absence of sufficient
evidence or argument to the contrary, we find Appellant’s contention
unpersuasive of Examiner error in connection with claims 11, 30, 40, 46 and
49 and sustain the rejection of claims 11, 30, 46 and 497.

Claim 43
11th Argument
Appellant argues that, while Olson may disclose Ethernet as a form of
network connectivity, it does not “disclose anything about a data storage
device comprising a single physical interface (for communicatively coupling
the data storage device to one or more PVRs), wherein the physical interface
comprises an ‘Ethernet interface’ as recited in Claim 43.” App. Br. 61-62.
The Examiner responds that, having found that Olson discloses the claimed
single interface of base claim 23 (see discussion supra), Olson’s disclosure
of Ethernet network connectivity in combination with the disclosure of an
interface teaches or suggests the claimed combination. We agree with the

7 Claim 40 is further addressed infra in connection with its base claim 38.
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Examiner for the reasons supra in connection with base claim 23 and concur
in the finding that the combination of features teaches or suggests the
disputed claim limitations. Therefore, in the absence of sufficient evidence
or argument to the contrary, we find Appellant’s contention unpersuasive of
Examiner error in connection with claim 43 and sustain the rejection of that
claim.

Claim 38
12th Argument
Appellant argues that “a motherboard is a printed circuit board which
does not teach an ‘integrated circuit’ as recited in Claim 38.” App. Br. 65,
Reply Br. 31. We disagree since, based on the meaning of motherboard8, one
of ordinary skill in the art at the time of the invention would have
understood that a motherboard typically includes components in the form of
integrated circuits. Therefore, we find that the combination of Olson, Win2k
and Tanenbaum teaches or suggests the disputed limitation of an integrated
circuit providing the recited functions.
Appellant further contends that “nowhere does Olson disclose
anything about ‘the incorporation of one or more additional data storage
drives within a storage device,’ as recited in Claim 38.” App. Br. 67. We
disagree for the reasons supra, e.g., as set forth in connection with the 1st
Argument.

8 Motherboard n. The main circuit board containing the primary components
of a computer system. This board contains the processor, main memory,
support circuitry, and bus controller and connector. Other boards, including
expansion memory and input/output boars, may attach to the motherboard
via the bus connector. Microsoft Computer Dictionary, Fifth Edition,
Microsoft Press, p 439 (2002.)
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Appellant still further contends “a software or application does not
teach a controller as recited in claim 38 in light of what is described in the
specification of the instant application.” App. Br. 68-69. In particular,
Appellant argues that, because Appellant’s Specification discloses a
hardware controller, Olson’s software-based Virtual Storage Management
System (VSMS) 20 fails to teach the controller of claim 38. App. Br. 68-69.
We disagree and decline to import limitations from the Specification into the
claims.9 Instead, we find that Appellant’s argument is unpersuasive as not
commensurate in scope with claim 38.
For the reasons supra and in view of Appellant’s failure to provide
sufficient evidence or argument to the contrary, we find no Examiner error
and sustain the rejection of claim 38 and of dependent claims 39-42 not
separately argued.

Rejections Under 35 U.S.C. § 102(e)
Claims 44-45
13th Argument
Appellant contends that “Olson describes adding multiple devices,
wherein each device contains a single hard disk drive, which clearly does not
suggest the concept of expanding a single device by way of adding
additional drives.” App. Br. 72. (Emphasis omitted.) As we have found this
contention to be unpersuasive of error in connection with the rejection under

9 “[T]he PTO gives claims their ‘broadest reasonable interpretation.’” In re
Bigio, 381 F.3d 1320, 1324, (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000)). “Moreover, limitations are not to be read into
the claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184,
(Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321(Fed. Cir. 1989)).
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35 U.S.C. § 103(a) (see 1st Argument, supra), we likewise find such
contention to be unpersuasive of error in connection with the rejection under
35 U.S.C. § 102(e) for the same reasons. Therefore, we sustain the rejection
of claim 44 under 35 U.S.C. § 102(e) together with the rejection of claim 45
not separately argued.

CONCLUSION
We find that:
(i) The combination of Olson and Win2K teaches or suggests
the disputed limitations of claims 1, 4, 6, 9, 10, 17, 23, 25,
43, 44 and 47;
(ii) The combination of Olson and Win2k is proper in rejecting
claims 11, 30, 40, 46 and 49 under 35 U.S.C. § 103(a);
(iii) The combination of Olson, Win2K, and Tanenbaum teaches
or suggests the disputed limitations of claim 38; and
(iv) Claim 44 is anticipated by Olson.
Therefore, we sustain the rejection of claims 1-11, 17, 19, 23-30, 43-
49 under 35 U.S.C. § 103(a) over Olson and Win2k and of claims 38-42
over Olson, Win2K, and Tanenbaum. Furthermore, we sustain the rejection
of claims 44-45 under 35 U.S.C. § 102(e) as being anticipated by Olson.

DECISION
The Examiner’s decision to reject claims 1-11, 17, 19, 23-30 and 38-
49 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
Appeal 2010-011884
Application 11/049,905

20

AFFIRMED

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